Fraud in Trademark Applications and
Registrations: Proving or Defeating Allegations Navigating Differing Standards at the TTAB and
in the Regional Circuits, Mitigating the Risk of Invalidation
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TUESDAY, JANUARY 13, 2015
Presenting a live 90-minute webinar with interactive Q&A
Stephen R. Baird, Shareholder, Winthrop & Weinstine, Minneapolis
Jennifer Lee Taylor, Partner, Morrison & Foerster, San Francisco
Theodore H. Davis, Jr., Partner, Kilpatrick Townsend & Stockton, Atlanta
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m
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.com
Proving or Defeating
Allegations of Fraud
January 13, 2015
Presented By: Jennifer Lee Taylor
(415) 268-6538
6
Medinol Ltd v. Neuro Vasx Inc.
• Registered mark: NEUROVASX
• Class 9: “medical devices, namely, neurological stents and
catheters”
• Statement of Use
• Petition to cancel alleged that Registration was procured by
respondent’s knowingly false or fraudulent statements, and that “said
false statements were made with the intent to induce authorized
agents of the PTO to grant said registration, and reasonably relying
upon the truth of said false statements, the PTO did, in fact, grant
said registration to Registrant.”
7
Medinol Ltd v. Neuro Vasx Inc.
• ‘‘[T]the Trademark Office relies on the thoroughness, accuracy and
honesty of each applicant. . . . Allowing applicants to be careless . . .
Would result in a registration improperly accorded legal presumptions
in connection with goods on which the mark is not used.”
• The appropriate inquiry is “not into the registrant’s subjective intent,
but rather into the objective manifestations of that intent.”
• “Statements made with such a degree of solemnity clearly are – or
should be – investigated thoroughly prior to signature and
submission.”
8
Medinol Ltd v. Neuro Vasx Inc.
• ‘‘The undisputed facts in this case clearly establish that respondent
knew or should have known at the time it submitted its statement of
use that the mark was not in use on all of the goods. Neither the
identification of goods nor the statement of use itself were lengthy,
highly technical, or otherwise confusing, and the President/CEO who
signed the document was clearly in a position to know (or to inquire)
as to the truth of the statements therein.”
• 67 U.S.P.Q.2d 1205, 1209-10 (T.T.A.B. 2003)
9
In re Bose
• Registered mark: WAVE
• Class 9: “television receivers, video cassette recorders, video
cassette players, camcorders, radios, clock radios, audio tape
recorders and players, portable radio and cassette recorder
combinations, compact stereo systems and portable compact disc
players”
• Section 8 and 9 Affidavit
• “Hexawave counterclaimed for cancellation of Bose’s WAVE mark,
asserting that Bose committed fraud in its registration renewal
application when it claimed use on all goods in the registration while
knowing that it had stopped manufacturing and selling certain goods.”
10
In re Bose
• “By equating ‘should have known’ of the falsity with a subjective
intent, the Board erroneously lowered the fraud standard to a simple
negligence standard.”
• [A]n allegation of fraud in a trademark case, as in any other case,
should not be taken lightly. Thus, we hold that a trademark
[registration] is obtained fraudulently under the Lanham Act only if the
applicant or registrant knowingly makes a false, material
representation with the intent to deceive the PTO.”
11
In re Bose
• “Subjective intent to deceive, however difficult it may be to prove, is
an indispensable element in the analysis. Of course, because direct
evidence of deceptive intent is rarely available, such intent can be
inferred from indirect and circumstantial evidence. But such evidence
must still be clear and convincing, and inferences drawn from lesser
evidence cannot satisfy the deceptive intent requirement.”
• In re Bose Corp., 580 F.3d 1240, 1244-45 (Fed. Cir. 2009)
12
Elements
• False representation of material fact
• Knowledge or belief that the representation is false
• Intent to induce reliance on the misrepresentation
• Subjective intent/intent to deceive
• Reasonable reliance on the misrepresentation
• Damages
13
Standard for Pleading Fraud
• Must be pleaded with particularity
• FRCP 9(b): “In alleging fraud or mistake, a party must state with
particularity the circumstances constituting fraud or mistake.”
• Exception: Malice, intent, knowledge, and other conditions of a
person's mind may be alleged generally.
14
Burden of Proof
• Clear and convincing evidence
• Intent can be inferred from indirect and circumstantial evidence
• “[M]ust still be clear and convincing, and inferences drawn from
lesser evidence cannot satisfy the deceptive intent requirement."
• Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1366 (Fed. Cir.
2008).
16
Pleading Fraud in the TTAB
• Notice of Opposition
• Petition to Cancel
• Counterclaim
• Motion to Amend pleadings
17
Timing
• Except on a ground for which application to cancel may be filed at
any time under paragraphs (3) and (5) of section 1064 of this title . . .
the right of the owner to use such registered mark in commerce for
the goods or services on or in connection with which such registered
mark has been in continuous use for five consecutive years
subsequent to the date of such registration and is still in use in
commerce, shall be incontestable. 15 U.S.C. § 1065.
• Grounds for cancellation of a mark at any time: the mark has become
generic or abandoned, the registration was obtained fraudulently, or
the mark is being used to misrepresent the source of the
goods/services in connection with which it is being used. 15 U.S.C.
§ 1064(3).
18
TTAB Remedies
• Cancel entire registration
• Delete specific goods or entire class from registration
• Reject entire application
• Delete specific goods or entire class from application
• Loss of standing in proceeding if common law rights not asserted
19
District Court Remedies
• Declaratory judgment
• Order the USPTO to cancel a registration, in whole or in part
• Order the USPTO to reject an application, in whole or in part
20
Considerations for Plaintiffs
• If a registration is more than 5 years old, consider fraud as basis to
seek cancellation
• Allege harm to establish standing in TTAB
• Investigate thoroughly and state allegations of fraud clearly and
specifically
• Prior to sending demand letter or initiating TTAB proceeding or
district court infringement action, audit applications and registrations
and file amendments or even replacement applications, as
necessary, to limit exposure to fraud claims
21
Considerations for Defendants
• Investigate plaintiff’s rights thoroughly to determine if fraud claim can
be brought as a counterclaim or in a separate opposition proceeding
• Investigate thoroughly and state allegations of fraud clearly and
specifically
• Audit applications and registrations to limit exposure to fraud claims
and file amendments or even replacement applications, as necessary
• Fraud cannot be corrected by amendments made after the fraud
claim is filed
22
Guidelines
• Investigate facts carefully and read documents thoroughly before
signing any document filed in USPTO
• Err on the side of caution
• Consider filing only single class applications
• Use broad language to describe goods and services
• Be candid in USPTO filings
• Audit all applications and registrations to ensure absolutely correct
Fraud in Trademark Applications and
Registrations: Proving or Defeating
Allegations
Ted Davis
Kilpatrick Townsend & Stockton LLP
Fraud On
The USPTO
• allegedly fraudulent averments of the exclusive right to use applied-for marks in commerce, see, e.g., E. W., LLC v. Rahman, 896 F. Supp. 2d 488 (E.D. Va. 2012);
• allegedly fraudulent averments of use in commerce, see, e.g., Patsy’s Italian Rest., Inc. v. Banas, 658 F.3d 254 (2d Cir. 2011);
• allegedly fraudulent averments of mark ownership, see, e.g., Country Fare LLC v. Lucerne Farms, 102 U.S.P.Q.2d 1311 (D. Conn. 2011);
They include:
Bases of Allegations of Fraudulent Procurement and
Maintenance
24 24
Fraud On
The USPTO
• allegedly fraudulent averments of dates of first use in commerce of applied-for marks, see, e.g., Pinnacle Pizza Co. v. Little Caesar Enters., 598 F.3d 970 (8th Cir. 2010);
• allegedly fraudulent averments of a bona fide intent to use applied-for marks in commerce, see, e.g., Spin Master, Ltd. v. Zobmondo Ent’mt LLC, 778 F. Supp. 2d 1052 (C.D. Cal. 2011);
• submission of allegedly fraudulent specimens, see, e.g., Edge Games, Inc. v. Elec. Arts., 745 F. Supp. 2d 1101 (C.D. Cal. 2010);
They include:
Bases of Allegations of Fraudulent Procurement and
Maintenance
25 25
Fraud On
The USPTO
• allegedly fraudulent averments of the inherent distinctiveness of applied-for marks, see, e.g., Fair Isaac Corp. v. Experian Info. Sys., 650 F.3d 1139 (8th Cir. 2011);
• allegedly fraudulent averments of the acquired distinctiveness of applied-for marks, see, e.g., Southco, Inc. v. Penn Eng’g & Mfg. Corp., 768 F. Supp. 2d 715 (D. Del. 2011);
• allegedly fraudulent averments of the nonfunctionality of applied-for marks, see, e.g., Modern Fence Techs., Inc. v. Qualipac, 726 F. Supp. 2d 975 (E.D. Wis. 2010);
They include:
Bases of Allegations of Fraudulent Procurement and
Maintenance
26 26
Fraud On
The USPTO
• allegedly fraudulent averments of the excusable nonuse of registered marks, see, e.g., ZAO Odessky Konjatschnyi Zawood v. SIA “Baltmark Invest,” 109 U.S.P.Q.2d 1680, 1683-84 (E.D. Va. 2013); and
• allegedly fraudulent declarations of incontestability, see, e.g., Willis v. Can’t Stop Prods., Inc., No. 92051212, 2011 WL 4871875 (T.T.A.B. Sept. 21, 2011) (nonprecedential).
They include:
Bases of Allegations of Fraudulent Procurement and
Maintenance
27 27
Fraud On
The USPTO
28
Establishing Fraud: Allegedly Fraudulent
Averments of Mark Ownership
The [application] shall be verified by the applicant and
specify that ... the person making the verification believes
that he or she, or the juristic person in whose behalf he or
she makes the verification, to be the owner of the mark
sought to be registered ....
Sections 1(a)(3)(A) and 1(b)(3)(A) of the Lanham Act, 15
U.S.C. §§ 1051(a)(3)(A), 1051(b)(3)(A) (2012).
28
Fraud On
The USPTO
29
Establishing Fraud: Allegedly Fraudulent
Averments of Mark Ownership
For [the defendants] to show that [the plaintiff]
committed fraud by asserting ownership of the [applied-
for] mark[] ... to the USPTO, [the defendants] must
prove, by clear and convincing evidence, that [the
plaintiff] deliberately and deceitfully misrepresented
itself to be the owner of the mark[]. Thus, if [the plaintiff]
had “at least ‘color of title’ to the mark,” it did not
commit fraud by asserting ownership.
Haggar Int’l Corp. v. United Co. for Food Indus., 906 F.
Supp. 2d 96, 112 (E.D.N.Y. 2012) (quoting Yocum v.
Covington, 216 U.S.P.Q. 210, 216-17 (T.T.A.B. 1982)).
29
Fraud On
The USPTO
31
Establishing Fraud: Allegedly Fraudulent
Averments of Mark Ownership
Although a high burden applies to the Plaintiff’s
claim that Defendant committed fraud on the
Trademark Office, the Court finds that the Plaintiff has
clearly met its burden of persuasion [by] presenting
clear and convincing evidence that ... the Plaintiff had
clear rightful ownership to the [disputed] trademark and
that the Defendant made material misrepresentations in
its application ... despite its knowledge of the Plaintiff[’]s
rightful ownership of the mark.
Country Fare LLC v. Lucerne Farms, 102 U.S.P.Q.2d
1317-18 (D. Conn. 2011).
31
Fraud On
The USPTO
32
Establishing Fraud: Allegedly Fraudulent Averments of
the Exclusive Right to Use Applied-For Marks
The [application] shall be verified by the applicant and
specify that ... to the best of the verifier’s knowledge and
belief, no other person has the right to use such mark in
commerce either in the identical form thereof or in such
near resemblance thereto as to be likely ... to cause
confusion, or to cause mistake, or to deceive.
Sections 1(a)(3)(D) and 1(b)(3)(D) of the Lanham Act, 15
U.S.C. §§ 1051(a)(3)(D), 1051(b)(3)(D) (2012).
32
Fraud On
The USPTO
33
[The signatory] had no awareness that any other
organization was using the marks for which [the
applicant] sought federal protection. This fact alone
compels reversal of the fraud finding, as [the signatory]
could not have intended to deceive the PTO in attesting
to an oath that he believed was entirely accurate.
Sovereign Military Hospitaller Order of Saint John of
Jerusalem of Rhodes & of Malta v. Fla. Priory of the
Knights Hospitallers of the Sovereign Order of Saint John
of Jerusalem, Knights of Malta, the Ecumenical Order,
702 F.3d 1279, 1291 (11th Cir. 2012).
Establishing Fraud: Allegedly Fraudulent Averments of
the Exclusive Right to Use Applied-For Marks
33
Fraud On
The USPTO
34
[W]hen an applicant avers that it has the exclusive right
to use the [applied-for] mark, a fraud claim against the
applicant will not lie unless the applicant knew that
another person “possess[ed] a superior or clearly
established right to use the same or substantially
identical mark” for the same or substantially the same
goods or services.
ZAO Odessky Konjatschnyi Zawod v. SIA “Baltmark
Invest,” 109 U.S.P.Q.2d 1680, 1686 (E.D. Va. 2013) (third
alteration in original) (quoting Intellimedia Sports, Inc. v.
Intellimedia Corp., 43 U.S.P.Q.2d 1203, 1208 (T.T.A.B.
1997)).
Establishing Fraud: Allegedly Fraudulent Averments of
the Exclusive Right to Use Applied-For Marks
34
Fraud On
The USPTO
36
[E]ven assuming arguendo that [the defendant]
individually had the right to use the mark, he has not
produced evidence tending to show how he could have
honestly believed that [his cousins], or even his
siblings, did not have a right to use the mark that was
at least equal to his.
MPC Franchise, LLC v. Tarntino, 19 F. Supp. 3d 456, 481
(W.D.N.Y. 2014).
Establishing Fraud: Allegedly Fraudulent Averments of
the Exclusive Right to Use Applied-For Marks
36
Fraud On
The USPTO
37
The [application] shall be verified by the applicant and
specify that ... the mark is in use in commerce ....
Section 1(a)(3)(C) of the Lanham Act, 15 U.S.C.
§ 1051(a)(3)(C) (2012).
Establishing Fraud: Allegedly Fraudulent
Averments of Use in Commerce
Within six months after ... the notice of allowance ..., the
applicant shall file ... a verified statement that the mark is in
use in commerce ....
Section 1(b)(1)(D)(1) of the Lanham Act, id.
§ 1051(b)(1)(D)(1).
37
Fraud On
The USPTO
39
The surrounding facts and circumstances
provide clear and convincing evidence that
applicant did not have a good faith reasonable
basis for believing that he was using [his] mark in
commerce for all the services identified in the
application.
Nationstar Mortgage LLC v. Ahmad, 112 U.S.P.Q.2d
1361, 1375 (T.T.A.B. 2014).
Establishing Fraud: Allegedly Fraudulent
Averments of Use in Commerce
39
Fraud On
The USPTO
40
We do not need to resolve the issue of the
reasonableness as it is not part of the analysis.
There is no fraud if a false misrepresentation is
occasioned by an honest misunderstanding or
inadvertence without a willful intent to
deceive.... Unless the challenger can point to
evidence to support an inference of deceptive
intent, it has failed to satisfy the clear and
convincing evidence standard required to establish
a fraud claim.
In re Bose Corp., 580 F.3d 1240, 1246 (Fed. Cir. 2009)
(emphasis added) (citation omitted).
Establishing Fraud: Allegedly Fraudulent
Averments of Use in Commerce
40
Fraud On
The USPTO
41
Applicant was obligated to read and understand
what he was signing and investigate the accuracy
of his statements in the application to confirm they
had evidentiary support prior to signature and
submission to the USPTO. Even if counsel had
been retained to file the involved application,
applicant would have shared the duty to ensure
the accuracy of the application and the truth of its
statements.
Nationstar, 112 U.S.P.Q.2d at 1376 (citation omitted).
Establishing Fraud: Allegedly Fraudulent
Averments of Use in Commerce
41
Fraud On
The USPTO
42
[I]f an auditor is “not aware of facts indicating that
a transaction was suspicious, or part of a fraud,
the auditor’s failure to investigate the transaction—
even if negligent—does not provide a basis for a
fraud claim.”
Iowa Pub. Employee’s Retirement Sys. v. Deloitte &
Touche LLP, 919 F. Supp. 2d 321, 332 (S.D.N.Y. 2013)
(quoting In re CBI Holding Co., 419 B.R. 553, 566–67
(S.D.N.Y. 2009)).
Establishing Fraud: Allegedly Fraudulent
Averments of Use in Commerce
42
Fraud On
The USPTO
[A] party alleging that a registration was fraudulently
obtained must prove the following elements by clear and
convincing evidence:
1. A false representation regarding a material fact.
2. The person making the false representation knew
or should have known that the representation was false
(“scienter”).
3. An intention to induce the listener to act or refrain
from acting in reliance on the misrepresentation.
4. Reasonable reliance on the representation.
5. Damage proximately resulting from such reliance.
Patsy’s Italian Rest., Inc. v. Banas, 658 F.3d 254, 270-71
(2d Cir. 2011) (emphasis added) (footnote omitted).
Establishing Fraud: Allegedly Fraudulent
Averments of Use in Commerce
44
Fraud On
The USPTO
45
Federal courts and the TTAB consistently have
held that the date of first use is immaterial to a
registration application so long as the actual date
of initial use predated the application.... Thus, even
if [the challenger] is correct that [the registrant]
claimed the wrong date of first use in its
applications—a question on which the Court need
not take a position—it fails to demonstrate how
such an error was material.
Paleteria La Michoacana, Inc. v. Productos Lacteos
Tocumbo S.A. De C.V., No. 11–1623 (RC), 2014 WL
4759945, at *31 (D.D.C. Sept. 25, 2014).
Establishing Fraud: Allegedly Fraudulent
Recitations of Dates of First Use in Commerce
45
Fraud On
The USPTO Fair Isaac Corp. v. Experian Info. Solutions, Inc., 650
F.3d 1139 (8th Cir. 2011)
46 46
Fraud On
The USPTO
[The defendants] presented a PTO expert, who
testified that a reasonable examiner would consider it
important in deciding whether to allow the registration
to know whether others were using [the claimed mark]
as a score range for credit scoring services.
Furthermore, the PTO had initially rejected [the
registrant’s] trademark application because it was
merely descriptive .... Thus, there was sufficient
evidence for a reasonable jury to determine that the
PTO relied on a false representation in deciding
whether to issue the registration.
Fair Isaac Corp. v. Experian Info. Solutions, Inc., 650 F.3d
1139, 1149 (8th Cir. 2011) (emphasis added). 47
Establishing Fraud: Allegedly Fraudulent
Averments of Inherent Distinctiveness
47
Fraud On
The USPTO
49
If ... [the mark] has geographic significance and
had such significance when the examiner’s
amendment was entered, [the applicant] was
obliged to be truthful about that fact during the
conversation with the examining attorney and, if
necessary, seek correction of the examiner’s
amendment after it was entered. Deliberately
omitting relevant information ... may be treated as
the equivalent of a false statement in its effect and
also, under certain circumstances, show the
necessary element of intent.
Caymus Vineyards v. Caymus Med. Inc., 107
U.S.P.Q.2d 1519, 1524 (T.T.A.B. 2013).
Establishing Fraud: Allegedly Fraudulent
Averments of Inherent Distinctiveness
49
Fraud On
The USPTO
50
Establishing Fraud: Allegedly Fraudulent
Averments of Acquired Distinctiveness
The Director may accept as prima facie evidence that
the mark has become distinctive, as used on or in
connection with the applicant’s goods in commerce,
proof of substantially exclusive and continuous use
thereof as a mark by the applicant in commerce for the
five years before the date on which the claim of
distinctiveness is made.
Section 2(f) of the Lanham Act, 15 U.S.C. § 1052(f) (2012).
50
Fraud On
The USPTO
52
Establishing Fraud: Allegedly Fraudulent
Averments of Acquired Distinctiveness
In evaluating a [claim of acquired distinctiveness],
the PTO considers whether the mark has become
distinctive through ... “substantially exclusive and
continuous use in commerce.” Therefore, the
existence of other bars bearing the name “Blue
Martini” does not militate against the granting of a
[registration], so long as the party seeking a
[registration] can demonstrate substantial exclusivity.
Quality Serv. Grp. v. LJMJR Corp., 831 F. Supp. 2d 705,
711 (S.D.N.Y. 2011) (quoting 15 U.S.C. § 1052(f) (2006)).
52
Fraud On
The USPTO
53
Establishing Fraud: Allegedly Fraudulent
Averments of Acquired Distinctiveness
[E]ven if [the principal’s] statements in the Section 2(f)
declaration were false, [her] testimony demonstrates
that the statements were not made with the requisite
intent to deceive the USPTO.... [S]he testified that she
“believed” that the statements regarding continuous
use contained in the Section 2(f) declaration were true
based on her personal observations ..., and that she
did not merely rely on the advice of counsel to sign the
declaration but undertook “some due diligence” to
verify that the statements were true.
Alcatraz Media Inc. v. Chesapeake Marine Tours, Inc., 107
U.S.P.Q.2d 1750, 1769-70 (T.T.A.B. 2013), aff’d, 565 F.
App’x 900 (Fed. Cir. 2014). 53
Fraud On
The USPTO Southco, Inc. v. Penn Eng’g & Mfg. Corp., 768 F. Supp.
2d 715 (D. Del. 2011)
54 54
Fraud On
The USPTO
55
Establishing Fraud: Allegedly Fraudulent
Averments of Acquired Distinctiveness
[T]he Examiner ... expressed the view that the
assertions in the application and affidavit were
insufficient standing alone to establish acquired
distinctiveness.... That the Examiner sought
additional evidence on the issue of distinctiveness
does not, in the Court’s view, establish that she did
not rely on the initial evidence submitted.
Southco, Inc. v. Penn Eng’g & Mfg. Corp., 768 F. Supp.
2d 715, 726 (D. Del. 2011).
55
Fraud On
The USPTO Spin Master, Ltd. v. Zobmondo Entm’t LLC, 778 F.
Supp. 2d 1052 (C.D. Cal. 2011)
56 56
Fraud On
The USPTO
57
Establishing Fraud: Allegedly Fraudulent
Averments of a Bona Fide Intent to Use
[T]he falsity and intent prongs are separate, so
absent the requisite intent to mislead the PTO, even
a material misrepresentation would not qualify as
fraud under the Lanham Act warranting cancellation.
Spin Master, Ltd. v. Zobmondo Entm’t LLC, 778 F. Supp.
2d 1052, 1061 (C.D. Cal. 2011).
57
© 2014 Winthrop & Weinstine, P.A. www.winthrop.com
Avoiding or Mitigating Fraud in Trademark Applications and
Registrations: Best Practices and Strategies for Success
January 13, 2015
Stephen R. Baird
© 2012 Winthrop & Weinstine, P.A. www.winthrop.com © 2014 Winthrop & Weinstine, P.A. www.winthrop.com 59
As the Trademark Fraud Pendulum Swings
• The Way it Was Before Medinol
• The Medinol Detour
• The Post-Bose Era
• What’s Next, a Swing Back to Medinol?
• Forgiveness Given Modified TEAS Forms?
• Resisting Trademark Commodity Mindset
© 2012 Winthrop & Weinstine, P.A. www.winthrop.com © 2014 Winthrop & Weinstine, P.A. www.winthrop.com 60
Consider the Many Places Where
Fraudulent Statements Might Occur
• Initial Application
• Statement During Prosecution
• Amendment to Allege Use
• Extension Requests to Submit SOU
• Statements of Use
• Section 8 Declarations
• Section 15 Declarations
• Section 9 Renewal Applications; and
• Amendments
© 2012 Winthrop & Weinstine, P.A. www.winthrop.com © 2014 Winthrop & Weinstine, P.A. www.winthrop.com 61
Even When You Defeat a Fraud
Allegation, You May Lose
• Gives up Valuable Leverage
• Emboldens Adversary in Diversion
• Complicates the Issues
• Increases Cost of Defense
• Creates Client Relationship Challenges
• Results in Inevitable Finger-Pointing
© 2012 Winthrop & Weinstine, P.A. www.winthrop.com © 2014 Winthrop & Weinstine, P.A. www.winthrop.com 62
Best Practices and Strategies for
Avoiding Fraud Challenges Altogether • Verify Facts at outset and Prior to Publication
• Submit Specimen of Use for Each Item
• Maintain Records of Use/Bona Fide Intent for Each Item
• Description of Goods, Less is More
• Use of “and/or” in Description of Goods/Services
• Exercise Patience in Waiting for Defensible Use
• Exercise Caution in Responding to E.A. Requests
• Select the Sworn Signatory Wisely
• Properly Educate the Signatory
• Have Signatory Rely on Advice of Counsel
© 2012 Winthrop & Weinstine, P.A. www.winthrop.com © 2014 Winthrop & Weinstine, P.A. www.winthrop.com 63
Strategies for Mitigating the Harsh
Consequences of Fraud Challenge
• Consider Simple, Straight-forward Application for Core Goods in a Single Class
• Avoid Multi-class Applications Altogether
• Refile New Use-based Applications Free of Potential Defects From Vulnerable Existing Registrations
• Consider Separate Section 8 & 15 Declarations
• Don’t Have Outside Counsel Sign on Behalf of Applicant or Registrant
• Precision and Accuracy, Pick Your Words Carefully
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What About This?
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Specimen Identified in Statement of Use
as “Scanned Label”
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Another Gatorade Label
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Gatorade Label Evidences Descriptive Use
of Claimed Inherently Distinctive Mark
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Descriptive Use in Two Places on Label
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Compare These Images
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Specimen Submitted With Section 8 & 15
Declaration
• Described as: “A digital
photograph of a bottle containing a non-alcoholic, non-carbonated fruit flavored drink.”
• Registration Permitted to Expire, Cancelled June 6, 2014
• New Identical Intent-to-Use Application Filed September 10, 2014, Published November 25, 2014
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Thoughts Concerning Gatorade Example
• Carefully Select Specimens With No Invitations for Descriptiveness Refusal
• If Specimen Label Was Not Complete, Identify as “Scanned Portion of Label”
• Or, Submit Digital Photograph of Gatorade Bottle Showing Frontal View
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Issues on the Horizon?
• Is “Reckless Disregard” Sufficient to Infer Subjective Intent to Deceive?
• Will “Most Cases” Continue to Have Fraud Claims?
• Will the Board Become More Friendly to Dismissing Fraud on Summary Judgment?
• Does Nationstar Mortgage Signal a Return to Medinol Era?
• Striking a Proper Balance Between Appropriate Diligence and Commodity Mindset
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Thank You!
Stephen R. Baird Chair, Intellectual Property
and Trademark Brand Management
Winthrop & Weinstine, P.A. (612) 604-6585
[email protected] www.DuetsBlog.com